Trademark Status

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Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? In the United States, under what common law, people can lay claim to a mark if they use it. It is not necessary to formally register a trademark. This fact and the sovereignty states have over the creation of chartered business entities and trade names, makes a trademark search imperative before one spends time and money registered a trademark.

Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.

It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.

What is a preliminary trademark search?

Your preliminary trademark search is an important first step before you spend time and money considering whether to apply for a potential trademark or not.

If you have trademark experience, you can use free online resources like our Trademark Search engine, or the Trademark Electronic Search System(TESS) offered to the public by the US Patent and Trademark Office(USPTO) to search for existing marks that are identical to your planned trademark. While preliminary trademark searches are a critical part of your registration process, a successful search that show no conflicts with identical marks does not necessarily mean the Trademark Office will not reject your registration application.

if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.

How do I perform a trademark search?

First, we recommend your start by defining the class you want to register. You can find your class, using our Trademark Class Search tool. Using this tool you enter your product/service, and it will tell you the class or classes you should register.

After you have found your class(es), you can go directly to your contry's Trademark Office and perform the search there. You can also try our Trademark Search engines.

When searching, try different combinations of your name. For example, if you are searching for AMAZON, look for AMASON, HAMAZON, or similar word patterns. Try several different combinations of words and spellings.

Notice that several countries do not have online trademarks databases. You must go to local Trademark Office and ask for a list of trademarks.

Trademark Search may be challenging and time-consuming if you do not have the time or experience, our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.

Do I need an Attorney to perform a Trademark Search?

No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.

Where can I perform a trademark search?

If you have some knowledge about trademark registration, you can search using our Trademark Search engine. If not, werecommend hiring a trademark attorney or trademark service like Marcaria.com to handle your trademark registration requirements especially a trademark search because the entire process is complex and takes time.

Notice that if you do not complete the application process carefully, the registration process could be extended many months and cost far more than you intended to pay. The trademark search is a critical part of the process.

A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.

You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Marcaria.com Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.

What are ways to avoid common pitfalls?

Why are trademark registration applications refused? Your mark is

Similar to existing marks using sound, meaning, or appearance

Similar in use or marketing approach

An unoriginal description of a service, product, or geographic location easily confused by the public with other brands

Deceptive, confusing, or misleading

A person or family surname

What are some ways to avoidable pitfalls when filing a trademark or service mark?

Develop a fanciful, suggestive, and strong trademark that avoids a generic

Take time conduction a thorough, comprehensive trademark search that include unregistered, common law marks. Include, for example, searches for phonetically similar words, synonyms, homonyms, and foreign words with similar meanings.

Answer all Trademark Office Actions.

What happens if my Trademark is already filed or registered?

If you discover that another company has a pending application or has a registered trademark, and the other party shares common business products with you, they have priority of the mark. In countries where "common law" applies, their use of the mark before your trademark filing also gives them a claim to property rights depending on the scope of their use of the mark.

If the other mark owner used their trademark for a limited time in a limited area, you might be able to resubmit a registration application with Trademark Office. Keep in mind your application has now a very high probability of rejection.

What is the difference between a strong and weak mark?

The characteristics of a registrable trademark can be subtle. A professional trademark search will find areas where your proposed mark overlaps pre-existing trademarks. This task is critical since infringement of someone's existing property rights leads directly to the rejection of or opposition to your trademark application.

Once you verify a mark’s uniqueness through a search, consider the strength or weakness of your trademark design in preventing future infringement. The design characteristics will decide any difficulties other parties would have copying your mark for counterfeiting purposes or creating a similar yet legally permissible version as a business competitor. For example, suggestive, fanciful, or arbitrary marks that do not directly describe your goods or services in commonly-used terms are strong marks. Descriptive or generic marks that use popular phrases for goods or services may be registrable but are harder to defend as unique. Trademarks that are easy to reproduce or counterfeit are weak marks.

Part of the application process for a trademark is reviewing the strength or weakness of your design compared to existing marks already registered. An authorizing body also considers the hazards of potential future disputes over infringement issues and property rights. Seek professional aid choosing a trademark design that helps you legally protect your property rights in foreign jurisdictions and international markets.

What is the International Nice Classification (NCL)?

In 1957, The World Intellectual Property (WIPO) set up the Nice Classification (NCL). This system groups goods and services together using a single classification scheme. Since the agreement covers trademarks registered in several different languages, the system facilitates searches for marks that may need translation. NCL separates business activity into 45 classes: 34 for products and 11 for services.

There is a detailed taxonomy or tree-like listing of goods and services, compiled by the European Union Intellectual Property Office (EUIPO), within each class that further differentiates categories. These entries provide greater detail but are non-binding categories. Since the use of this classification scheme is widespread and complicated, seeking professional help to conduct a trademark search is well-worth considering. USPTO and most countries worldwide have adopted the NCL protocol. There were 84 member countries3, as of January 2016, that abide by the Nice Classification agreement.

The Classification Agreement lists over 10,000 goods and 1,000 services. A new updated edition is released every five years. These editions include changes to the agreement over the five-year revision period. WIPO publishes new changes in the NCL involving specific classes annually. It released a new version on January 1, 2016. Trademark offices of countries who have adopted this agreement must include the NCL codes in their official documents.

The Nice Classification System categorizes products and services by class; you may file your trademark in one or more classes.

There are countries that allow one class per application, whilst others allow multiple classes within the same application.

The benefit of filing one application per class is that each class will have its independent process. If one class receives an objection or an opposition, the other applications/classes will not be affected. The disadvantage is that the price for various applications is higher.

Furthermore, filing a multi-class application (in the countries where this is possible) is cheaper, but there is a risk that the entire application is affected if one of the classes receives an objection or opposition.

In the first scenario, filing in more or less classes will not affect the registration probability each application. In the second scenario, if there are more classes, there is greater exposure and the chances of receiving objections or oppositions increase.

The Trademarks Office provides a certificate per application (not per class). Remember that not all countries allow a multi-class application.

How do I perform a Trademark Class Search?

Trademark classifications are necessary for the registration process but can be misleading. The 45 categories in the Nice Agreement describe in generic terms, highly nuanced areas of commerce. We recommend you begin with your core business and describe the item(s) that you produce in clear, precise terms. Once you conclude what the best category is, focus on fringe commercial activities. Add as many trademark categories as you need to help define the property rights you want to protect. Business plans typically span a variety of areas to allow flexibility in the marketplace. Choose classes that allow you to protect your long-term goals. The appropriate choice of a trademark class will not only increase the likelihood of acceptance, but also improve your ability to defend future infringement.

When you apply for your trademark application, the classification choices depend on how you define your goods or services. Once you have a definition, find at least one classification class that covers your business definition. Consider other overlapping trademark classes that also describe your goods or services. You should also consider coordinated classes. Your choice of one or more classification categories will have a significant impact on the acceptance or rejection of your application.

How do I determine the correct class(es) for my product(s)?

You must select the correct classification to increase your probabilities of a successful trademark registration. The Trademarks Office will not reimburse fees associated to your trademark application if your trademark is rejected. Careful revision by a trademark expert, that specializes in analyzing the strength of your trademark in its selected class(es) compared to your competitors is important as the number of objections and oppositions are increasing.

2016 statistics show that there has been an 11%* increase in oppositions presented in the United States. These figures suggest that it is becoming more valuable to conduct a Trademark Comprehensive Study before filing your trademark in order to avoid possible rejections or avoid violating the rights of a previously registered trademark. The increase in litigations over the past years is a warning to the potential future litigations concerning Intellectual Property.

Coordinated trademark classes cross over within the standard NCL class categories because they relate to one another. Most businesses diversify their activities to improve their market share. Your trademark application should reflect your activity in these associated industries to protect your brand name. Choose coordinated classes that not only refine your registration application, but allow for any potential future expansion of your commercial activities. These related classes can be used during a comprehensive trademark search to find conflicts before the submission of your application to the USPTO.

Do I need to know my trademark class to file a trademark?

You must include the appropriate trademark class designation when you complete the registration application, because almost all Trademark Offices around the world use industrial and commercial groupings to efficiently search for potential infringement issues. These regulatory bodies and administrators need a way to differentiate the numerous trademarks used around the world. Separating marks into classes that are divided into goods and services is a simple first step in reviewing an application for a new mark. When evaluating the strengths or weaknesses of the proposed trademark, a classification system facilitates the association of "like" with "like" and thus, helps match competitors more efficiently in similar or linked industries.

Another reason behind needing to know which trademark class(es) cover your mark is for your protection. When you use the most appropriate class(es) for classification, you will compare your trademark to marks already used by competitors in your chosen markets. How does the uniqueness and distinctiveness of your mark compare to other marks? Does the trademark offer you a competitive edge regarding your brand’s message?

Using a classification system simplifies public searches of your mark by competitors in your industry and makes it easier for competitor’s to avoid any infringement issues. The USPTO's Acceptable Identification of Goods and Services Manual is one of many sources to lookup trademarks online. You need to choose a trademark class when you apply for your mark to help a trademark office notify your target audience of your mark. A trademark class helps when both researching pre-existing marks as well as searching for potential property claim to avoid future infringement issues.

If you are unaware of which class or classes offer the best protection for your goods and services, familiarize yourself with the NCL listing. We alternatively recommend ordering a professionally prepared Trademark Comprehensive Study. By opting for this, our experienced attorneys will be able to review your product or service description and match it to the most appropriate class(es). If they have any questions or need more clarification, they will contact you.

It is an in-depth trademark search report, it will not only list identical and similar trademarks (graphic & phonetic) that may conflict with yours, but also give you an Attorney's opinion about registration probabilities and the class(es) that belong your product(s)/service(s). The Study includes the following sections:

a) Optimal Class Protection

Includes identifying under which classes it would be advisable that your trademark be registered. Classes are determined using the description of your products and/or services.

b) Similarity SearchOur attorneys will perform an in-depth search of existing registered trademarks under the relevant class, identifying those of graphic or phonetic similarity.

c)Review and RecommendationBased on the search results, our attorneys will give a recommendation about registration probabilities.

How much does a Trademark Comprehensive Study cost?

The cost of this service depends on three factors: the country that you need the Study, the number of classes, and the type of trademark (wordmark, logo or combined).

You can find in the following URL Trademark Prices, price information for this service in different countries.